Concept and significance of the inspection procedure in industrial property law
The inspection procedure is a legal instrument in the field of industrial property law, mainly applied in patent, utility model, design, and trademark cases. Its main purpose is to secure and preserve evidence of possible infringements by third parties. It enables the rights holder to inspect objects, devices, procedures, or business premises of a suspected infringer in order to substantiate a suspicion of infringement with concrete facts. The procedure thus serves to protect intellectual property rights and is an essential element for enforcing rights in the area of industrial property law.
Legal basis of the inspection procedure
§§ 140c Patent Act and § 19a Utility Model Act
The central legal basis for the inspection procedure is found in the Patent Act (§ 140c PatG), the Utility Model Act (§ 19a GebrMG), the Design Act (§ 46 DesignG), and the Trademark Act (§ 18 MarkenG). The procedure was introduced into German law as part of the implementation of the EU Enforcement Directive (Directive 2004/48/EC). The relevant provisions govern claims to inspection as well as the associated requirements.
International regulations
At both European and international levels, inspection procedures are recognized as part of effective legal enforcement. EU Member States are obliged to effectively ensure the enforcement of intellectual property rights (see Article 7 of Directive 2004/48/EC). In other jurisdictions, procedures similar to the ‘Anton Piller Order’ in common law exist.
Requirements for the inspection procedure
Claim requirements
Certain conditions must be met for an inspection procedure to be ordered:
- There must be a sufficiently concrete suspicion of infringement of an industrial property right.
- The inspection must appear necessary for the preservation of evidence.
- The relevant items must be in the possession or on the premises of the opposing party.
Principle of proportionality
The procedure is subject to the principle of proportionality. The interests of the rights holder in securing evidence must be balanced against the interests of the alleged infringer in protecting trade secrets and maintaining business operations. The inspection must not impose an unreasonable burden and must be limited to what is necessary to preserve evidence.
Court’s authority to order
The judicial order is generally issued upon application. The competent court is the one that could also be seized in the main proceedings. The court decides at its own discretion whether the requirements are met and whether the inspection will be ordered.
Course of the inspection procedure
Filing an application
In particular, the applicant must set out:
- The intellectual property right and its validity (for example, patent number, trademark registration)
- The specific suspicion of an infringement
- The items or facilities to be inspected
- The necessity of the measure
- If necessary, the applicant may also request an order without prior hearing of the opposing party in order not to jeopardize the preservation of evidence (ex parte procedure).
Conducting the inspection
The inspection is carried out by an expert appointed by the court, a bailiff, or the court itself. The presence of the applicant is often permitted; however, protection of trade and business secrets is ensured through various measures, such as the involvement of confidential persons.
Recording and securing evidence
The results of the inspection are recorded. Photos, video recordings, or other suitable means of evidence may be created. The extent is determined by the court in each individual case.
Legal remedies and means of objection
The respondent may appeal the court’s order (e.g., by immediate complaint). Furthermore, a subsequent judicial review can be obtained, especially if the preliminary inspection was conducted ex parte.
Protection of trade secrets and procedural guarantees
Protection of secrets
When ordering the inspection, the court must take appropriate measures to protect trade secrets. These include:
- Exclusion of the public from the inspection
- Obligation of those present to maintain confidentiality
- Restriction of access to the information obtained
Procedural rights of the affected party
The owner of the premises or of the affected items is – as far as possible – heard and may request that the measure be limited. In special cases, a surprise inspection may initially be conducted in order to prevent illegal destruction of evidence.
Costs of the inspection procedure
The procedural costs are governed by the Court Costs Act (GKG) and the Cost Regulation. The losing party generally bears the costs. However, in interim legal protection, the court may make different orders.
Significance and practical relevance
In practice, the inspection procedure is of central importance, particularly in the technology sector and in industries with a high level of innovation. It enables the effective enforcement of intellectual property rights even when the infringer hides evidence in their own business premises. The procedure thus contributes to the detection and legal prosecution of infringements and has established itself as an effective means of evidence preservation in industrial property law.
Summary
The inspection procedure represents an important, legally regulated instrument that enables rights holders to secure evidence in cases of potential infringements. It is subject to strict legal requirements, protects the interests of the parties involved with particular regard to the protection of secrets, and is supervised by judicial oversight. The practical relevance of the procedure in industrial property law remains undiminished in view of increasing technical complexity and globalized competition.
Frequently asked questions
What requirements must be met for an inspection procedure to be ordered in industrial property law?
The inspection procedure may be ordered pursuant to § 140c PatG, § 18b GebrMG, § 44a DesignG, § 19d MarkenG, and Art. 7 of the Enforcement Directive (2004/48/EC) if there are sufficiently concrete indications of an infringement of an intellectual property right, such as a patent, utility model, registered design, or trademark. The applicant must convince the court that an infringement is likely and that the inspection is necessary to secure evidence. In addition, the measure must be proportionate, meaning that the rights of the applicant and the respondent, particularly any trade secrets, must be balanced against each other. Generally, urgency must be demonstrated so that evidence is not lost or altered. The inspection is usually ordered as a preliminary injunction and may, if there are extensive interferences with third-party rights, be made dependent on the applicant providing security.
Who is authorized to conduct and supervise the inspection procedure?
The inspection procedure is typically conducted by a neutral judicial expert or bailiff appointed by the competent court. In addition, the parties and their lawyers are usually allowed to be present so that the respondent has the opportunity to safeguard their interests. Third parties, specifically technically skilled assistants, may be included on request and with judicial approval. The role of the bailiff is to monitor proper conduct of the inspection and to prepare a written report on the course and findings. All those present are bound to confidentiality, especially with regard to business secrets or other confidential information.
What protective mechanisms exist to safeguard the respondent’s trade secrets?
The inspection in industrial property law must not result in the improper disclosure of the respondent’s trade secrets or other confidential information. For this purpose, the relevant laws and established case law provide for various protective measures. For example, the court may order inspection in camera, redact sensitive information, or grant access initially only to the expert, who is also bound by confidentiality. Only after judicial release may the parties view the documents. The court may also require the applicant and their advisers to maintain confidentiality. In many cases, the transfer of evidence, such as samples or data carriers, is made under seal and for evaluation only by court-appointed experts.
How does the judicial procedure for obtaining an inspection order proceed?
The applicant submits a substantiated application to the court responsible for the location of the suspected infringement, in which they specifically describe the alleged infringement, the objects or sites to be inspected, and the purpose of the inspection. The court then examines the substantiation of the infringement claims and weighs the interests of the parties. If the application is granted, the court issues an order—generally as a preliminary injunction—in which the scope, modalities, and possible protective measures (such as security deposits) are detailed. The order is usually delivered to the respondent ‘by surprise’ and carried out immediately to prevent destruction or manipulation of evidence. The procedure is summary and particularly urgent, so that remedies against the order are usually allowed only within short time limits.
What options does the respondent have for legal defense after the order for inspection?
The respondent has various legal remedies and protective measures available. They can file an immediate complaint against the inspection order and request suspension, in which case the court’s decision must usually be made immediately. If the inspection has taken place, they may object to the manner of its conduct, the scope of the evidence collected, as well as its use. Moreover, the respondent can sue for injunction or return of any items taken if it turns out afterwards that no infringements occurred. The respondent may also claim damages or appropriate compensation if the inspection was unlawful or their rights were unreasonably impaired.
What are the consequences of an unjustified or abusive order for an inspection procedure?
If it is subsequently determined with legal effect that the inspection order was unjustified—such as when there was in fact no infringement or the applicant intentionally made false statements—this results in significant civil liability for the claimant. In particular, the claimant is obliged to compensate the respondent for all damages caused by the measure (for example, business interruptions, reputational damage, defense costs). Usually, the court requires the applicant to provide security before ordering the inspection, which the respondent can access for compensation. An abusive application can also result in a cost risk for the applicant and disadvantages in subsequent proceedings. Criminal consequences such as false accusation or procedural fraud are also possible.
